High Court Takes Up Battle Over Offensive Trademarks

WASHINGTON (CN) — An Asian-American music group jokingly called The Slants will take their fight for trademark protection to the Supreme Court after the justices picked up the case Thursday. Simon Shiao Tam, the front man and bassist for The Slants, defends the band’s outrageous name as an attempt to “own” a stereotype against his community. The U.S. Trademark Office denied Tam’s applications twice, citing the Lanham Act’s prohibition on disparaging “persons, living or dead, institutions, beliefs, or national symbols.” Although the Federal Circuit initially upheld that rejection, proceedings became heated as 12-judge court reheard the case en banc in October 2015. U.S. Circuit Judge Kimberly Moore had remarked at the hearing that the government’s reasoning could let it to deny a doctor protection of his medical practice if he shared a name with Osama bin Laden. Moore wound up penning the Federal Circuit’s en banc reversal in December. “It is a bedrock principle underlying the First Amendment that the government may not penalize private speech merely because it disapproves of the message it conveys,” Moore wrote. Michelle Lee, the director of the U.S. Patent and Trademark Office, petitioned the Supreme Court in April, and the justices granted her a writ of certiorari today. Per its custom, the court did not issue any comment in taking up the case. Last year’s ruling included a stinging dissent from U.S. Circuit Judge Jimmie Reyna, who likened a racially offensive trademark to a business policy of discriminating against minorities. “Whether a restaurant named ‘SPICS NOT WELCOME’ would actually serve a Hispanic patron is hardly the point,” said Reyna, the former president of the Hispanic National Bar Association. “The mere use of the demeaning mark in commerce communicates a discriminatory intent as harmful as the fruit produced by the discriminatory conduct.” The majority ruling notes that “courts have been slow to appreciate the expressive power of trademarks.” “Words – even a single word – can be powerful,” Moore wrote. “Mr. Simon Shiao Tam named his band The Slants to make a statement about racial and cultural issues in this country. With his band name, Mr. Tam conveys more about our society than many volumes of undisputedly protected speech.” Tam was represented by Ronald Coleman with the New Jersey-based firm of Archer & Greier. Last year, the attorney predicted that the en banc reversal would have wide ripples in the realm of trademark battles. “It’s not going to be the government that passes on winners or loses in the forum of public debate,” Coleman said. Judge Alan David Lourie meanwhile wrote in dissent that the majority’s holding broke decades of jurisprudence. “First, one wonders why a statute that dates back nearly seventy years – one that has been continuously applied – is suddenly unconstitutional as violating the First Amendment,” Lourie wrote. “Is there no such thing as settled law, normally referred to asstare decisis?” Judges Reyna and Lourie both joined a partial dissent by Judge Timothy Dyk. Though Dyk said Tam’s trademark did deserve copyright protection, the judge criticized what he called the majority’s “sweeping” conclusion that a subclause of the Lanham Act was unconstitutional. The American Civil Liberties Union’s attorney Lee Rowland, who also argued before the circuit as a friend-of-the court, celebrated the ruling as a free-speech victory at the time. “Our First Amendment prevents the government from giving rights and benefits only to people engaged in the ‘right kind’ of speech, and that principle holds just as true in the trademark system,” Rowland said. “It should be up to the public, not the government, to drive bad ideas from the marketplace.” One high-profile case that The Slants’ case could affect is the ongoing court battles surrounding the trademark for the Washington Redskins. The team is appealing after a federal judge canceled its trademark in July 2015. That appeal will move up to the Richmond, Va.-based Fourth Circuit.